The United States Patent and Trademark Office (USPTO) evaluates every patent application—whether utility or design—against three fundamental requirements. These requirements are codified in the Patent Act, and while they may appear straightforward, each is supported by extensive legal precedent from federal courts at every level. Understanding these requirements is crucial for filing a patent application with strong prospects for approval.
1. Patentable Subject Matter and Utility
To qualify for patent protection, an invention must constitute patentable subject matter. The Patent Act defines patentable inventions as “useful process, machine, manufacture, or composition of matter.”
This requirement has two components:
Utility: The invention must be useful and serve a practical purpose.
Categorical fit: The invention must fall into one of four specified categories:
- Process: A method or series of steps, such as a manufacturing procedure
- Machine: Any device designed to accomplish a useful function
- Manufacture: Any product or item that is the produced by a manufacturing process
- Composition of matter: A combination of two or more substances united through chemical reaction or mechanical mixing, whether in solid, gas, liquid, or powder form
Additionally, inventions in these categories must be either entirely new or represent meaningful improvements over existing items.
Note: Significant developments in law related patentable subject matter affect business processes and software inventions. These developments will be addressed in a future article.
2. Novelty
Novelty is a cornerstone concept in patent law. An invention is considered novel when no single existing method, device, manufacture, or composition contains all the features of your invention prior to your application’s filing date.
Put simply: to satisfy the novelty requirement, there cannot be a single prior reference that discloses every element of your invention.
3. Non-Obviousness
Beyond being novel, an invention must not be “obvious to a person of ordinary skill in the art”—a standard that extends beyond the novelty analysis.
While novelty concerns single prior references, non-obviousness addresses combinations of multiple references within the same technical field. An invention may be deemed obvious if all its features can be found across two or more prior references that predate the invention and relate to the same technical area.
The USPTO Examination Process
During examination, USPTO patent examiners search for issued patents and published applications that predate your filing date. Their searches typically focus on U.S. and English-language patent documents, though they may occasionally reference publications or existing products when relevant to the examination.
Professional Guidance Recommended
An experienced patent attorney can evaluate whether your invention satisfies the legal requirements for patentability and help draft an application optimized for successful USPTO examination and patent grant.
Book a 30-minute initial consultation to discuss your invention.
This information is general in nature. Always consult with a licensed patent attorney for advice specific to your situation.
Robert McConnell is the Principal Attorney of McConnell Law Firm PC, with nearly 20 years of startup experience in Silicon Valley.